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I currently have a classified ads domain in the .co.uk extension (say piggybank.co.uk). I am about to register the website and its name as a trademark.

There's also a website with the same name in the .com extension (say piggybank.com) which is currently on sale for several thousands USD.

Once I register the trademark, will I be able to legally get hold of the .com domain on the basis of trademark ownership (through ICANN or smth)?

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You can contact a lawyer for more information. –  Zistoloen Apr 2 at 13:55

2 Answers 2

It depends on some factors. First of them is: Is piggybank.com in the same branch as you are? If it is clearly something completely different, it might turn into a problem.

Then, is your name (now piggybank) some general word? Like Apple (Those lawyers have pulled some magic). If it is something less broad, something specific, that will increase your odds.

The age of that website is important, as well as the contents. Is it a blank 'this domain is still free' page, or is it an active website? If it is blank, it'll increase the chances you can get it.

I suggest that you register the name, and use that proof to contact the current owner of piggybank.com. Instead of draging this through some legal process, you can offer some reasonable amount. It will save you some few hundreds in legal-fees, and the same goes for them.

You can contact ICANN about this and ask what the requirement are for them to 'take over' the domain and give it to you, but they'll try to stay away from this type of problems as much as they can, this always gets messy when it goes wrong.

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thank you for the answer. No, the website name is a composite of two words (just like piggybank), not a broad term. Their website is not blank either, a first impression is that it's some company's website, but after closer inspection you can tell that it's just a placeholder website faking a company website with stock images. I mean they have a 'We are hiring' link where you can also make an offer for the website. –  user37475 Apr 3 at 13:40

I dont think you can register a trademark and then claim ownership of previously registered domain names, (though obviously you would need proper legal advice.)

Looking at the domain name dispute policy http://en.wikipedia.org/wiki/Uniform_Domain-Name_Dispute-Resolution_Policy

A complainant in a UDRP proceeding must establish three elements to succeed:

  • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
    • The registrant does not have any rights or legitimate interests in the domain name; and
    • The registrant registered the domain name and is using it in "bad faith".
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